The notion that one who fully discloses, and teaches those skilled in theart how to make and use, a genus and numerous species therewithin, has somehowfailed to disclose, and teach those skilled in the art how to make and use, thatgenus minus two of those species, and has thus failed to satisfy the requirementof s [sic] 112, first paragraph, appears to result from a hypertechnicalapplication of legalistic prose relating to that provision of the statute.

Ex Parte Harasin et al GAUDETTE 112(1) BAYER MATERIAL SCIENCE LLC The Examiner cites Ex parte Parks, 30 USPQ2d 1234, 1236 (BPAI 1993) in support of his contention that “when a negative limitation is set forth without direct support from the specification, it is not reasonable to infer that one had possession of the claimed invention.” (Ans. 5.) Appellants point out the Examiner has misapprehended our decision in Ex parte Parks. (Reply Brief (“Rep. Br.”), filed July 29, 2008, 4.) Contrary to the Examiner’s contention, Ex parte Parks supports Appellants’ position that the mere absence of literal support for the claimed “isocyanate-reactive component which is free of amine groups” (claims 1 and 11) “does not, in and of itself, establish a prima facie case for lack of adequate descriptive support under the first paragraph of 35 U.S.C. 112.” Ex parte Parks, 30 USPQ2d at 1236 (citations omitted).

Appellant has persuasively argued that the holdings in Ex Parte Simpson 218 USPQ 1020 (BPAI 1982) and Ex Parte Fressola 27 USPQ2d 1608 (BPAI 1993) do not apply to the facts in this appeal. In Ex Parte Simpson, we held that if a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim scope does not comply with the requirements of 35 U.S.C. § 112, second paragraph. 218 USPQ at 1022. "Nafion®" is not used in claim 84 to identify or describe a particular material or product. Rather, "Nafion® is simply a label on a depicted graph and the word Nafion® is used simply to refer to the label." (App. Br. 8.)

In Ex Parte Fressola, we held that "[i]ncorporation into the claims by express reference to the specification and/or drawings is not permitted except in very limited circumstances." 27 USPQ2d at 1609. Claim 84 "does not incorporate by reference a figure or table, it displays the figure and pinpoints the elements of the figure that relate to the limitations of the claim." (App. Br. 9.)